On 15 January 2018, the long-awaited Circular No. 16/2016/TT-BKHCN (“Amended Circular”) revising Circular No. 01/2017/TT-BKHCN (“Circular 01”), one of the core regulations in the Vietnam IP system, took effect. The Amended Circular marks extensive changes to prosecution procedures and related matters before the National Office of Intellectual Property of Vietnam (“NOIP”).
The Amended Circular revises 49 points out of total 67 points previously regulated by Circular 01, focused on patent and trade mark application examination procedures.
Following the first article on Patents, this article will focus on key changes for Trade Marks.
1. Authorisation of Applicant’s Representatives (Point 4)
Although Circular 01 was silent on this practical matter, applicants have always been able to provide authorisation and re-authorisation to an unlimited number of qualified local representatives. The Amended Circular officially confirms this.
However, under the Amended Circular, the NOIP will now only recognise and work with the latest recorded representatives for a particular application/registration. For example, if the most recent action for a mark is a simple renewal or recordal of change of name or address and is conducted by a new agent, that new agent (rather than the main legal representative who was responsible for earlier actions such as filing and prosecution) will become the sole authorised representative for the mark.
This will be problematic in cases where the main representative is not instructed to handle routine maintenance filings and will therefore not receive all notices and office actions related to a mark.
To avoid this issue, trade mark owners should consider clarifying the scope of local representative authorisations, especially in matters where they grant authorisation to more than one local representative.
2. Extended Deadline for Response to Office Action (Points 13.6 and 15.7)
The deadlines to respond to office actions regarding formality or substantive matters have been extended by one month. The new deadlines are:
- Formality Matters – Two months from the date of notification (previously one month)
- Substantive Matters – Three months from the date of notification (previously two months)
As was already the case under Circular 01, these deadlines can be extended once for the same period.
The new longer timeframes are a positive development which should provide sufficient time for applicants and their representatives to prepare and file responses to office actions.
3. Response to Disclaimer Request (Point 15.7)
It is not unusual for the NOIP to proactively impose a disclaimer on one or more element of a mark when issuing the notice for granting registration.
Under Circular 01, there was no specific procedure for an applicant to respond to or challenge such a disclaimer. Therefore, as a matter of practice, if the applicant did not agree with the disclaimer, they could choose to either:
- Accept the notice then file an appeal against the disclaimer; or
- Let the application lapse by refusing to pay the relevant registration fee.
Under the Amended Circular, the applicant can directly file an objection to the disclaimer request within three months from the date of the notice for granting registration. The objection then will be examined by the Trade Mark Department instead of the Board of Appeal.
4. Submission of New Details to Overcome Refusal Decision (Point 15.7)
Under Circular 01, if the NOIP issued a decision on refusal, the applicant was required to file an appeal to overcome the refusal.
Under the Amended Circular, instead of lodging an appeal, if the applicant uncovers or provides new details (that may affect the examination result) that have not been considered during the examination period, the NOIP may consider withdrawing the refusal decision after reviewing them and carrying out the re-examination process.
5. Force Majeure and Objective Obstacles (Point 9.4 and 9.5)
The Amended Circular provides that the duration of Force Majeure Events and/or Objective Obstacles will be excluded from running of the statutory time limit. To enjoy this exclusion, the applicant must submit a request accompanied with reasonable and justifiable evidence.
Though Force Majeure and Objective Obstacles were already regulated by the Civil Code and often referred as excuses for missing deadlines in practice, this is the first time IP regulations officially address these cases as specific circumstances in which the statutory limitation of time may be extended.
However, if an applicant seeks to rely on these grounds, it must be aware that the NOIP will decide such matters on a case-by-case basis and the decision will very much depend on the subjective opinion of the responsible examiner.
6. Opposition Settlement Procedures
- Opposed Mark’s Examination Result to be Delivered to the Opponent (Point 6.2)
Under Circular 01, the NOIP was only required to notify the opposing party of the final opposition result but not of the examination result of the opposed mark.
Under the Amended Circular, if the request for opposition is considered reasonable, the NOIP is obligated to inform the opposing party of the detailed results of the examination of the opposed application. This is to address inconsistencies in practice between the two Trade Mark Departments of the NOIP and make it easier for the opposing party to follow-up on the opposition settlement.
- Suspension of Application Examination due to Civil Litigation (Point 6.4)
If the NOIP is unable to confirm whether an opposition is founded or unfounded, it shall notify the parties and require that the opposing party institute court proceedings in accordance with civil procedure regulations to resolve the matter.
In such cases, under the Amended Circular, the opposing party is now required to submit a copy of the court’s notice of handling acceptance for the case within one month of the NOIP’s notice. The NOIP will then officially suspend the examination proceedings for the opposed mark until the civil procedure is concluded.
This is a change in formality requirements from Circular 01. Previously, the opposing party only needed to confirm that it intended to pursue the matter via civil procedures (if not already filed) and request suspension of the NOIP’s examination proceedings. Now, the NOIP requires proof that a civil matter has been filed.
The short timeframe of one month will present a significant challenge for parties seeking to resolve opposition proceedings via the courts. While this is currently rare in practice, it may become a more significant issue as civil procedures of this nature become more common in the future.
7. Submission of Priority Documents (Point 13.6)
The Amended Circular officially sets three months as the timeframe for the applicants to submit priority documents. (This was already the case in practice to comply with the requirements of the Paris Convention.)
8. Withdrawal of Applications (Point 17.5)
The Amended Circular adds clear regulations on handling requests for withdrawal of applications and sets a clear timeframe of two months for the NOIP to issue confirmation on acceptance of the withdrawal request
9. Extended Timeframe for Granting of Certificates of Trademark Registration (Point 18.2.a) and Handling of Validity Maintenance Requests (Point 20.3.b)
The deadlines for the NOIP to grant certificates and process validity maintenance requests have been extended. The new deadlines are:
- Granting of Certificates of Trademark Registration: 15 days (instead of 10 days)
- Handling of Validity Maintenance Requests: One month (instead of 10 working days)
10. Appeal and Appeal Settlement
- Exclusion from the subject of appeal (Point 22.1)
The Amended Circular clearly excludes the following contents from the subject of appeal:
- Requests for amendment or supplement of the subject application;
- New facts that have not been submitted during the examination progress, which can change the appealed notice/decision;
- In cases where the appellant is not the applicant, new facts that are not within the responsibility of the NOIP during the examination progress. In such cases, the appellant may file a request for additional examination.
According to the changes, the applicant must submit all possible arguments during the substantive examination stage.
- Independent Consultant, Board of Consultant (Point 22.8)
Depending on the complexity of the case, the Board of Appeal may seek consultation from the independent advisory experts or set up a consultation board comprising of experts in the relevant field to provide advice to the NOIP in its handling of appeals.
11. Response to Office Actions for International Registrations (Point 41.6)
Upon the provisional refusal of an international registration (IR) by the NOIP, the applicant may file a response within three months from the date the NOIP sends the provisional refusal to WIPO. If the NOIP does not change its opinion after reviewing the response and issues a decision of refusal, the applicant may file an appeal against the refusal decision within 90 days.
This is a significant development as under Circular 01 IR applicants were only given the option of filing an appeal against refusal. With this change, IRs are now treated the same as national applications in terms of the procedure for overcoming a refusal decision issued by the NOIP.
12. Well-Known Marks (Point 42.4)
Circular 01 provided that a mark could be recognised as a well-known trade mark according to civil procedures (i.e. by the Courts) or under a recognition decision of the NOIP. Circular 01 also provided that a well-known mark would be recorded on an official list of well-known trade marks to be administered by the of NOIP.
However, in practice, there has never been any list of well-known trade marks recorded by the NOIP. The recognition of well-known marks has (up to now) been applied on a case-by-case basis. Circular 01 and other relevant legislation was silent as to whether a trade mark owner can refer to recognition decisions in earlier cases to claim that a mark is well-known.
The Amended Circular seeks to clarify this by listing out two specific circumstances in which a trade mark may be recorded on the list of well-known trade marks of NOIP. Namely:
- the recognition of a well-known trade mark that leads to a decision on settlement of infringement enforcing such well-known trade mark rights; or
- the recognition of a well-known trade mark that leads to a decision on refusal of another trade mark.
In such cases, well-known trade marks are effectively recognised by an enforcement authority (for the first circumstance) and by the trade mark registration authority – the NOIP (for the second circumstance).
The Amended Circular specifically provides that well-known trade mark recognition granted in these two circumstances can be relied upon by the owner and should be considered by authorities when determining future IP right establishment and/or enforcement matters.
In summary, the Amended Circular will impact the practical application of the Vietnam Law on Intellectual Property, particularly rights establishment procedures before the NOIP.
Although there are still underlying issues that are unclear and controversial in the revisions, the Amended Circular is a positive development overall. It shows that IP practitioners’ feedback over the years has been received and taken into consideration by lawmakers. While, in some respects, the Amended Circular puts more pressure on IP agents and owners by setting out stricter requirements, in others it brings Vietnam’s IP law and practice one step closer to the international standards.
Any of the above general information is not legal advice and shall not be applied in any specific matter. Please contact us for our detailed advice and recommendation for your matters.